• American Well Corporation v. Teladoc Health, Inc.Institution denied
  PTAB · Nov 3, 2021 · IPR2021-00933 · APJ John P Pinkerton · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the four asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We are authorized to institute an inter partes review where a petition demonstrates a reasonable likelihood that the petitioner would prevail with respect to at least one challenged patent claim. 35 U.S.C. § 314(a). We are never compelled, however, to institute a review. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). We may exercise our discretion to deny review, for example, where a petition fails to identify “with particularity” the challenges or evidence supporting them. Id. at 1363; 35 U.S.C. § 312(a)(3). “Even when a petitioner demonstrates a reasonable likelihood” of prevailing with respect to at least one patent claim, institution of review “remains discretionary.” Adaptics Limited v. Perfect Co., IPR2018-01596, Paper 20 at 17 (PTAB Mar. 6, 2019) (informative). For the reasons explained below, we do not institute an inter partes” slip op. at 2

  • BurdenDecided for patent owner

    “c) Analysis We agree with Patent Owner that Petitioner has not sufficiently shown that Wang438 discloses limitation 1.1. Initially, we agree with Patent Owner that Wang438 does not disclose that monitoring device 50 displays any patient information. Id. at 23–24 (citing Ex. 2001 ¶ 59). Although Petitioner relies on paragraph 21 of Wang438, we agree with Patent Owner that paragraph 21 makes clear that the purpose of medical monitoring device 50, which may be a stethoscope, pulse oximeter, or EKG monitor, is to “take medical data from a patient.” Id. at 23 (citing Ex. 1005 ¶ 21). In other words, as Patent Owner states, “monitoring device 50 is a device that monitors data, not a ‘monitor’ that displays the data.” Id. (citing Ex. 1005 ¶ 21; Ex. 2001 ¶ 59) (emphasis omitted). Paragraph 21 does not disclose that monitoring device 50 displays any patient information. Instead, as Patent Owner argues, paragraph 21 of Wang438 discloses that monitoring device 50 may contain wireless transmitter 52 (as shown in Figure 1) that transmits the patient data to robot 12, which can then transmit the data to remote station 16. Id. at 23–24 (citing Ex. 1005 ¶ 21). We also agree with Patent Owner that Petitioner’s secondary references external to Wang438 cannot support an anticipation challenge based on Wang438. In that regard, Petitioner cites to five secondary references: Nellcor N-200 pulse oximeter operator’s manual (Ex. 1011, 16); GE-MAC 1200 ECG monitor operator’s manual (Ex. 1012, 9, 27); Phillips- PageWriter ECG monitor instructions for use (Ex. 1013, 14, 45–47); GE CARESCAPE V100 vital signs monitor brochure (Ex. 1017, 5); and, GE CARESCAPE V100 vital signs monitor operator’s manual (Ex. 1018, 13). See Pet. 23–28. None of these references were identified in the grounds set forth in the Petition. See Pet. 2–3. For the reasons stated below, we determine we cannot consider these secondary references because doing so would violate the requirement of Section 312(a)(3) for an inter partes review petition to identify “with particularity . . . the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” See 35 U.S.C. § 312(a)(3). We also determine we cannot consider these secondary references because ground 1 challenges claim 1 for anticipation under 35 U.S.C. § 102 based on Wang438, which requires Petitioner to show that the single reference Wang438 discloses, either expressly or inherently, the limitations of claim 1. See Schreiber, 128 F.3d at 1477. Permitting Petitioner to argue Wang438 together with the secondary references would, as Patent Owner argues, convert the basis for ground 1 from anticipation to obviousness under 35 U.S.C. § 103(a). See Prelim. Resp. 25. Thus, we also determine we cannot consider Petitioner’s secondary references because doing so would be contrary to the requirement for the petition to identify “with particularity . . . the grounds on which the challenge to each claim is based” (35 U.S.C. § 312(a)(3)) and the Board’s rule requiring a petition for inter partes review to identify the statutory grounds on which the challenge to the claim is based (37 C.F.R. § 42.104(b)).” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner agrees with Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 11 (citing Ex. 2001 ¶ 36). Based on our review of the limited record, we determine that Petitioner’s definition is consistent with the technology and skill reflected in the prior art of record and the specification of the ’185 patent. Thus, for purposes of this decision, we apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Petitioner does not propose a specific construction for any claim term in this proceeding. Pet. 3. Instead, Petitioner asserts that “[a]ll [claim] terms should be given their ordinary and customary meaning,” and “Petitioner also reserves the right to identify terms for construction as may become necessary in the related District Court case.” Id. Patent Owner agrees with Petitioner that no formal claim constructions are necessary at this point. Prelim. Resp. 11. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,761,185
• Werner Co. v. Louisville Ladder, Inc.All claims unpatentable
  PTAB · Aug 24, 2020 · IPR2019-00336 · APJ Richard H Marschall · IPR · Final written decision

  Claims 8–16 are unpatentable as obvious over the Louisville Catalog, Plotner, and Werner Brochure; claims 19 and 20 are unpatentable as obvious over those references and Modern Plastics Handbook.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties’ proposals do not differ in any respect that would suggest our determination on this issue would impact any of our findings in this case. At oral argument, the parties agreed that no issue in this case turns on the differences in the parties’ respective proposals. See Tr. 31:18–24 (Patent Owner’s counsel stating that “we do not believe that that slight difference between Petitioner and Patent Owner would be dispositive of any issue in the case”), 55:25–56:9 (Petitioner’s counsel stating that “all parties and experts agree that there’s no material difference in the proposed level of ordinary skill in the art”). The parties’ respective proposals differ in the number of years of experience required in the ladder design field; Petitioner proposes 5–7 years of experience, while Patent Owner proposes 3–5 years. Pet. 7; PO Resp. 6. Based on the full record before us, because the asserted references describe problems and solutions of ladder design that are relatively straightforward and presumably understandable with only a few years of industry experience, we apply Patent Owner’s proposal to our analysis because it requires fewer years of that experience.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “we disagree with Petitioner’s argument that all bonds, including fasteners, necessarily include a portion of the shell and tread as the claim requires. Pet. 12. Instead, the requirement that the bond include a portion of the shell and a portion of the tread suggests something more than a third structure such as a fastener as the bonding structure. In other words, when a fastener joins a tread to a shell, neither the tread nor the shell aids in holding the two together; the fastener performs that “bonding” function. Further, independent claim 14 already requires a “bond,” and claim 16, which depends from claim 14, “further” requires a “mechanical fastener” in addition to the bond, without describing it as a species of bond. Ex. 1001, 18:40–41. Reading the “bond” of claim 14 to encompass the “mechanical fastener” of claim 16 would conflict with claim 16’s treatment of the mechanical fastener requirement as separate from the bond limitation. As Patent Owner notes, claim 16 does not state that the bond further comprises a fastener; it states that the cover further comprises a fastener. See PO Sur-reply 5. This claim structure at least suggests that “bond” in claim 14 does not encompass fasteners. Further, the use of the “comprising” transition language merely allows for the addition of unclaimed fasteners to the independent claims without falling outside the scope of the claims. That well known aspect of the “comprising” language does not mandate a broader reading of “bond” to include fasteners. Second, we agree with Patent Owner that the Specification distinguishes between the claimed bonds and the use of mechanical fasteners. PO Resp. 9–10. First, in the Background, the Specification stresses the need for a bond that goes beyond the prior art use of mechanical fasteners. See Ex. 1001, 2:19–27. Later, in the Detailed Description, the Specification describes the use of mechanical fasteners as “in addition” to the physical or chemical bonds, and as a further safety feature should the bond fail. See id. at 10:35–45; 14:3–14. The most natural reading of these passages supports Patent Owner’s position that fasteners are distinct from, and could optionally be used in addition to, bonds, not that fasteners are a type of bond.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “for “entirely open face” is too narrow. The crux of Patent Owner’s construction is that “the lowermost interior surface and corners of the ladder rail are sufficiently exposed both for inspection during use and proper fitting of the shell.” PO Resp. 13. The language of claim 8 does not support this construction. Claim 8 defines how much of the ladder rail must be exposed, and merely states that “a portion of the ladder rail” must be exposed when the shell and rail are engaged. Ex. 1001, 17:16–19; see also id. at 18:20–22 (claim 13 requiring “said shell defines an entirely open face so that a portion of the ladder rail is exposed”). The claim language does not state that any particular “portion” of the rail, much less “the lowermost interior surface and corners” of the rail, must be exposed. The absence of such specificity in the claim language counsels against reading in that limitation. In addition, the Specification does not suggest that the exposed “portion” of the rail referred to in claim 8 must include those portions identified in Patent Owner’s construction. Instead, the Specification refers broadly to the disadvantages of needing to remove protective boots to inspect the rail, and the need to expose enough of the rail to perform an inspection, without mentioning any specific portions that must be exposed. Ex. 1001, 1:66–2:5, 6:61–7:14. Patent Owner also acknowledges that the claims cover Figures 3 and 9, and Figure 3 shows structures occluding portions of the lowermost portion of the ladder rail, such as rail flange retainers and web engagement member 59. Patent Owner’s effort to construe the claim to cover a face that exposes specific portions of the ladder rail that are somewhat exposed in its own figures, while not allowing for any less exposure of the rail, demands much more precision than the claim language and Specification provide. The prosecution history also fails to provide that specificity, as at most it reveals that the applicants distinguished the claims over prior art that largely surrounded the ladder rail on four sides, exposing only small portions of the rail. See Ex. 1018, 250; Ex. 2004, Figs. 1, 2, 6. Based on the foregoing, we decline to adopt Patent Owner’s proposed construction. The parties further dispute whether the claimed “face” corresponds to the plane or missing side opposite exterior wall 42, above interior wall 44 (as Petitioner proposes), or includes any plane along base 50 within the interior of shell 32 (as Patent Owner proposes). See Pet. Reply 4– 5; PO Sur-reply 6–7. We need not resolve this issue because it appears that Patent Owner’s proposal is broader than, and would encompass, the “face” Petitioner identifies, and would therefore fail to aid Patent Owner in its efforts to distinguish over the prior art. Nevertheless, we agree with Petitioner that the more natural reading of “face,” in light of the Specification, refers to a single plane on the side opposite exterior wall 42 and above interior wall 44. See Ex. 1001, 6:61–7:10. This comports with the “entirely open” aspect of the claim language, as only the side opposite interior wall 42 and above interior wall 44 is shown as “entirely open” in Figures 3 and 9, while the inside of the shell contains structures that render that area not entirely open. See id. at Figs. 3, 9.” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “C. Challenges Under 35 U.S.C. § 102(a)/(b) Based on the Louisville Catalog and Under 35 U.S.C. § 103(a) Based on Plotner and the Louisville Catalog. Petitioner challenges claims 8–11 under 35 U.S.C. § 102(a)/(b) as anticipated by the Louisville Catalog and claims 8–16 under 35 U.S.C. § 103(a) as unpatentable over Plotner and the Louisville Catalog. Pet. 14– 48. Petitioner expressly conditions both of these challenges on our adoption of Petitioner’s proposed construction of the bond limitation that includes mechanical fasteners. Id. at 14, 21. For the reasons discussed above in our construction of the bond limitation, we reject Petitioner’s proposed construction and conclude that “bond” does not include mechanical fasteners. Accordingly, because we reject Petitioner’s stated premise for these challenges, we conclude that Petitioner has not proven by a preponderance of the evidence that claims 8–11 are anticipated by the Louisville Catalog or that claims 8–16 would have been obvious based on Plotner and the Louisville Catalog.” slip op. at 21

  Patent outcomesUS 7,000,731 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,000,731
• Foursquare Labs, Inc. v. Mimzi, LLCRehearing denied
  PTAB · May 19, 2020 · IPR2019-01287 · APJ J John Lee · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution on claims 1–19 in place because the challenged prior-art and priority arguments did not show an abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it contends were misapprehended or overlooked by the Board. Id. The Board applies an abuse of discretion standard when reviewing a decision on a petition for rehearing. 37 C.F.R. § 42.71(c).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “As an initial matter, we first note that we determined in the Institution Decision that Petitioner had shown a reasonable likelihood of prevailing on its contention that all of the challenged claims are unpatentable as obvious over Ramer3 and Hayashi.4 Inst. Dec. 28–32. Patent Owner does not seek rehearing of that determination. Thus, even were we to agree with Patent Owner that Yoo is not prior art, we conclude that Patent Owner has not shown that the Institution Decision should be modified because we still would have instituted an inter partes review based on the Ramer/Hayashi ground. See 35 U.S.C. § 314(a) (prohibiting institution “unless the Director determines that . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” (emphasis added)); cf. Chevron Oronite Co. v. Infineum USA L.P., IPR2018- 00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two dependent claims out of twenty challenged claims); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 42–43 (PTAB Jan. 3 Ramer, US 2007/0061302 A1, published Mar. 15, 2007 (Ex. 1004, “Ramer”). 4 Hayashi, US 2007/0255831 A1, filed Apr. 28, 2006, published Nov. 1, 2007 (Ex. 1005, “Hayashi”). 24, 2019) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two claims out of twenty-three challenged claims).” slip op. at 4

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportOther

    “governing statute was 35 U.S.C. § 102(a)(2) (2013), as amended by the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). Inst. Dec. 13–19. On the record available at the time, we agreed with Petitioner that the ’981 Patent included claims with an effective filing date on or after March 16, 2013, the effective date of the AIA amendment to § 102. See id.; Reply 1–2; AIA § 3(n)(1). Specifically, we determined (preliminarily) that the challenged claims are not adequately supported by the written description of U.S. Patent Application No. 12/181,956 (“the ’956 Application”), and, thus, could not claim priority to the ’956 Application, the only application in the priority chain that was filed before the AIA’s relevant effective date. Inst. Dec. 17–19. Under post-AIA § 102(a)(2), a published patent application of another inventor (like Yoo) is prior art if it “was effectively filed before the effective filing date of the claimed invention.” Yoo was filed on May 6, 2008. Ex. 1003, code (22). Consequently, under post-AIA § 102(a)(2), Yoo would qualify as prior art because its filing date is before the effective filing date of the claimed invention.2 Ex. 1001, code (60). 2 We note that Yoo’s effective filing date precedes all of the possible effective filing dates listed on the face of the ’981 Patent, including the July 29, 2008 filing date of the ’956 Application. See Ex. 1001, code (60). As noted above and discussed further below, however, whether the claims are supported by the ’956 Application relates to the threshold issue of whether post-AIA § 102(a)(2) applies to Yoo.” slip op. at 3

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted

    “As an initial matter, we first note that we determined in the Institution Decision that Petitioner had shown a reasonable likelihood of prevailing on its contention that all of the challenged claims are unpatentable as obvious over Ramer3 and Hayashi.4 Inst. Dec. 28–32. Patent Owner does not seek rehearing of that determination. Thus, even were we to agree with Patent Owner that Yoo is not prior art, we conclude that Patent Owner has not shown that the Institution Decision should be modified because we still would have instituted an inter partes review based on the Ramer/Hayashi ground. See 35 U.S.C. § 314(a) (prohibiting institution “unless the Director determines that . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” (emphasis added)); cf. Chevron Oronite Co. v. Infineum USA L.P., IPR2018- 00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two dependent claims out of twenty challenged claims); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 42–43 (PTAB Jan. 3 Ramer, US 2007/0061302 A1, published Mar. 15, 2007 (Ex. 1004, “Ramer”). 4 Hayashi, US 2007/0255831 A1, filed Apr. 28, 2006, published Nov. 1, 2007 (Ex. 1005, “Hayashi”). 24, 2019) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two claims out of twenty-three challenged claims).” slip op. at 4

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 9,128,981
• Cisco Systems, Inc. v. Centripetal Networks, Inc.Some claims unpatentable
  PTAB · May 18, 2020 · IPR2018-01760 · APJ J John Lee · IPR · Final written decision

  Claims 1–7, 10–12, 14–21, 24, and 25 are unpatentable as obvious over Sourcefire; claims 8, 9, 13, 22, and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In its Response, Patent Owner does not dispute Petitioner’s definition of the level of skill in the art.3 Based on the complete trial record, we find 3 Dr. Orso testified to a slightly different description of the level of skill in the art (Ex. 2002 ¶ 36), but Patent Owner did not argue during trial that Dr. Orso’s description should be adopted instead of Petitioner’s description and waived any such argument as a result. See In re NuVasive, Inc., 842 Dr. Staniford’s testimony credible and persuasive (Ex. 1003 ¶¶ 21–24), and we adopt Petitioner’s definition as a result. B.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). In the Decision on Institution, we preliminarily construed the term “network-threat indicator” as an “indicator that represents the identity of a resource associated with a network threat.” Inst. Dec. 8. During trial, neither party disputed this preliminary construction. See PO Resp. 25; Pet. Reply 7–8; Tr. 10:22–11:9. We do not discern any evidence in the full record after trial indicating that this construction is incorrect or should be modified. Moreover, the Specification supports this construction, indicating that “network addresses, ports, fully qualified domain names (FQDNs), uniform resource locators (URLs), uniform resource identifiers (URIs), or the like” are examples of “network-threat indicators.” Ex. 1001, 3:18–26. Thus, we apply this construction in this Decision.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Based on the above facts and case law, we conclude that Sourcefire was publicly accessible. The evidence of record indicates that the Sourcefire 3D System was publicly marketed and sold, and that the Sourcefire reference was actually distributed to over 500 customers of the Sourcefire 3D System. Ex. 1005 ¶¶ 11, 19; Ex. 1042 ¶¶ 5–9. This vastly exceeds the distribution to six people in MIT and distribution of 80 copies in Garrett. Record evidence also supports Petitioner’s contention that the customers who received Sourcefire included entities interested in network security products, including persons of ordinary skill in the art. See Ex. 1042 ¶ 9; see also Ex. 1004, 1, 32–33 (identifying Sourcefire as a “User Guide” and indicating Sourcefire provides information for network administrators); Ex. 1005 ¶ 5 (indicating Sourcefire was drafted in consultation with, and reviewed by, engineers who designed the Sourcefire system). Moreover, similar to MIT and as discussed in Medtronic, the record indicates that the recipients of Sourcefire were not subject to confidentiality requirements restricting use or further distribution. See Ex. 1004, 2 (Sourcefire copyright page stating, “You may use . . . and otherwise copy and distribute [Sourcefire] solely for non-commercial use”).5 Although Patent Owner asserts that MIT and Klopfenstein are distinguishable because they involved “the free distribution of academic documents to conference and meeting attendees” (PO Sur-reply 7), case law indicates that distribution to commercial entities also may be sufficient. See Garrett, 422 F.2d at 878; Pet. Reply 3.6” slip op. at 15

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Id. at 65. These largely conclusory arguments, however, fail to explain how refreshing an event view or event summary page, whether at a regular interval or otherwise, teaches generating different types of log entries at the same time for different portions of packets in the manner claimed. The cited testimony of Dr. Staniford does not provide any further illumination, instead repeating essentially the same conclusory statements made in the Petition. See Ex. 1003 ¶¶ 162, 173; 37 C.F.R. § 42.65(a). Petitioner’s Reply also fails to supply the necessary explanation or supporting evidence. Petitioner notes that “flow-log entries are generated from the packet-logs”—thus, flow-log entries must be generated after the corresponding packet-log entries and would reflect any changes made to those entries. Pet. Reply 19–21. Although true, these facts pertain only to a single portion of packets, i.e., that their packet-log entries are generated first, and that the related flow-log entries are generated afterward. The same is true even considering that this process can occur at a predetermined “refresh interval.” Petitioner does not identify any specific teaching or suggestion in Sourcefire that indicates how the generation of log entries for two different portions of packets would operate. Instead, Petitioner relies on a bare assertion—without any specific basis in Sourcefire—that “the processing of the packet-logs and the flow-logs are continually being updated or refreshed.” Without sufficient supporting evidence, that bare assertion and the conclusory testimony of Dr. Staniford are inadequate to meet Petitioner’s burden to prove the unpatentability of these claims by a preponderance of the evidence.” slip op. at 35

  Patent outcomesUS 9,413,722 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,413,722
• Amazon.Com, Inc. v. Customplay, LLCAll claims unpatentable
  PTAB · Mar 4, 2020 · IPR2018-01496 · APJ J John Lee · IPR · Final written decision

  Claims 4–6 and 10–20 are unpatentable as obvious under the stated § 103(a) grounds; Patent Owner’s motion to exclude is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, or computer science, as well as three years of experience in the design of digital video systems. Pet. 10–11 (citing Ex. 1002 ¶¶ 24–26). Patent Owner does not dispute Petitioner’s formulation of the level of ordinary skill in the art. Based on the information and testimony presented in the Petition, we adopt Petitioner’s formulation. B.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Claim Construction For petitions filed before November 13, 2018, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Petitioner contends no express claim constructions are necessary to resolve the issues presented in the Petition. Pet. 11. Patent Owner contends the inventor acted as his own lexicographer in presenting a number of definitions in the Specification of the ’346 Patent, and asserts that these definitions should be used in this proceeding. PO Resp. 16. We determine that no claim terms of the challenged claims in the ’346 Patent require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy require express construction, and only to the extent necessary to resolve the controversy). C.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “retrieving supplemental content, including “an image of the actress” (visual depiction of the performer), based on a mapping (reference) that associated that content to the segment depicting that actress. See Ex. 1004 ¶ 278; Pet. 28–29. Petitioner asserts inter alia that a skilled artisan would have been motivated to combine these teachings with the system in Thomas because displaying an actor’s image, as taught in McIntire, would have been a well-known technique applied in a conventional fashion to the similar device taught in Thomas to yield predictable results. See Pet. 29–30 (citing Ex. 1002 ¶ 68; KSR, 550 U.S. at 417). In addition, the Petition notes that Thomas teaches displaying “actor information” such as “biographical information” and “[a]ny other suitable information relating to . . . the actor,” which would have suggested to a skilled artisan to include images of the actor. Id. at 30 (quoting Ex. 1003 ¶ 106); Ex. 1002 ¶ 68. This analysis is persuasive, and its supporting evidence is credible and convincing.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “such metadata from a service. Ex. 1006, 6:44–50. The Petition sets forth several reasons why a person of ordinary skill would have been motivated to combine these teachings, including that it constitutes a simple substitution of one known technique (Reimer’s request for actor information) for another similar technique (Clarke’s request for metadata) to obtain predictable results. Pet. 73–75 (citing KSR, 550 U.S. at 417). Although Patent Owner argues Clarke “teaches away” from the claimed user request and that the combination of Clarke and Reimer is based on impermissible hindsight, its positions are unpersuasive because they are conclusory and unsupported. PO Resp. 54–55. In particular, with regard to teaching away, Patent Owner fails to identify evidence indicating that a skilled artisan would have understood Clarke to “criticize, discredit, or otherwise discourage the solution claimed” in the ’346 Patent. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Based on the complete record, we find that this limitation is taught by the combination of Clarke and Reimer, and that an ordinary artisan would have been motivated to combine their teachings.” slip op. at 50

  Patent outcomesUS 8,494,346 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,494,346
• Cisco Systems, Inc. v. Centripetal Networks, Inc.All claims unpatentable
  PTAB · Feb 11, 2020 · IPR2018-01444 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–3, 5–11, 17–19, 21–27, 33–35, and 37–43 are unpatentable as obvious under § 103 over the listed combinations of Jungck and additional references.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “mean “any rule, message, instruction, file, data structure, or the like that specifies criteria corresponding to one or more packets and identifies a packet transformation function to be performed on packets corresponding to the specified criteria.” Dec. to Inst. 7–9. Petitioner agrees with our constructions. Pet. Reply 1–3. The Patent Owner Response proposes “dynamic security policy” be construed to mean “a non-static set of one or more rules.” PO Resp. 7. Patent Owner contends our construction alters the explicit language of the specification describing a dynamic security policy as one that includes any rule, message, etc. Id. at 8 (citing Ex. 1001, 4:43–49). According to Patent Owner, a rule itself is not a dynamic security policy, but only part of a dynamic security policy. Id.” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “11. Conclusion as to Claim 1 In consideration of the above, we are persuaded Petitioner has demonstrated sufficiently that the person of ordinary skill would have had reason to combine the teachings of Jungck and Bhatia as asserted in the Petition. We find that Petitioner has demonstrated by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. 103(a) as obvious over the combined teachings of Jungck and Bhatia. C. Claims 17 and 33 Petitioner treats together the elements of independent method claim 1 and the corresponding elements of independent claim 17, drawn to a system, and independent claim 33, drawn to non-transitory computer readable media having stored instructions. Pet. 37. Patent Owner treats claims 17 and 33 the same way. PO Resp. 12–39. For the same reasons as those applicable to claim 1, we find that Petitioner has shown by a preponderance of the evidence that independent claims 17 and 33 are unpatentable under 35 U.S.C. 103(a) as obvious over Jungck in view of Bhatia..” slip op. at 42

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “downstream clients flow into an edge device within an ISP, packet filters analyze the packets, and the packets may flow out of the edge device to an isolated network containing subscribing servers or their intended destinations (unless they are eradicated or prevented from reaching network 100). Pet. Reply 15–16; Ex. 1010 ¶ 111. We agree with Petitioner that, in view of the similarity in the functions performed by Emb#3 and Emb#4, the difference in the corresponding topologies relative to network 100 shown in Jungck’s Figure 6 and Figure 7 does not negate the reason to combine the respective teachings to a person of ordinary skill. Id. Jungck states edge server 602 of Emb#3 operates similarly to edge servers 402 and 502 of the first and second embodiments. Ex. 1010 ¶ 108. In its discussion of Emb#4, Jungck states As can be seen from the above embodiments, edge devices generally perform the basic functions of intercepting packets from the general flow of network traffic, processing the intercepted packets and potentially releasing the original packets and/or reinserting new or modified packets back into the general flow of network traffic. In general, it is the choice of which packets to intercept and the subsequent processing performed by each edge/packet intercepting device on the intercepted packets, e.g. the application, which distinguishes each device. Id. ¶ 125. We are persuaded that a person of ordinary skill would have had reason to combine the teachings of Emb#3 and Emb#4 to achieve the specific purpose stated in Jungck, i.e. to “decouple the interception of packets from the processing of those intercepted packets and provide a generic packet interception and pre-processing engine which can be utilized in parallel by multiple edge devices” and “[to] provide a standardized interface to a network such as the Internet for the connection of edge type or packet intercepting” slip op. at 30

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner

    “In order to accord substantial weight to secondary considerations in an obviousness analysis, the evidence of secondary considerations must have a nexus to the claims, i.e., there must be a legally and factually sufficient connection between the evidence and the patented invention.” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (internal quotations omitted). A nexus is presumed when “the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). If the product is not coextensive with the claims at issue—e.g., if the patented invention is only a component of the product—the patentee is not entitled to a presumption of nexus. See id. (citing Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). slip op. at 35

  Patent outcomesUS 9,137,205 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,137,205
• Procon Analytics, LLC v. Spireon, Inc.Institution denied
  PTAB · Nov 22, 2019 · PGR2019-00051 · APJ John P Pinkerton · PGR · Institution

  The Board denied institution of PGR on claims 1–14 because the Petition did not show it was more likely than not that any challenged claim was unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). While the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, the dispositive question is whether one skilled in the art would have reasonably understood or inferred from a prior art reference that every claim element is disclosed in that reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “A patent claim “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367– 68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (for an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”). Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see In re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be supported by a ‘reasoned explanation’” (citation omitted)).” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). While the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, the dispositive question is whether one skilled in the art would have reasonably understood or inferred from a prior art reference that every claim element is disclosed in that reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 17

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “is conclusory and not supported by the evidence. Prelim. Resp. 32, 37–40. Petitioner’s argument relies on Dr. Wilhelm’s testimony, Jefferies, and the knowledge of a person of ordinary skill in the art. See Pet. 28. Dr. Wilhelm testifies that “[c]onventional vehicle inventory management systems associate information with a particular identifier; the systems are agnostic as to whether that identifier represents a financial institution or dealer.” Ex. 1029 ¶ 73. Based on this testimony, Petitioner argues “it does not matter whether that identifier represents a bank or dealer.” Pet. 28. Petitioner then argues Jefferies teaches that a location device may be marked as “available/in inventory” to be associated with a vehicle. Id. Finally, Petitioner argues that, in view of these teachings, a person of ordinary skill “would have sought to manage various types of vehicle inventories for several types of owners, including dealers.” Id. As stated, we agree with Patent Owner that Petitioner’s argument that the “ownership” requirement would have been obvious is conclusory and not supported by the evidence of record. Initially, we note that Dr. Wilhelm’s testimony concerning conventional vehicle inventory management systems is conclusory and unsupported by factual evidence. Thus, we give little, if any, weight to Dr. Wilhelm’s opinion testimony that such systems are “agnostic” to whether equipment identifiers are associated with lending institutions or auto dealers. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (noting that “the Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations”). In any event, Dr. Wilhelm’s testimony adds nothing in this regard because, as discussed supra, Boling discloses equipment identifiers, such as UINs, are associated with the ID number of banks and auto dealers. See Ex. 1005, 6:22–26; 6:29–33.” slip op. at 26

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,089,598
• Cisco Systems, Inc. v. Centripetal Networks, Inc.Rehearing denied
  PTAB · Oct 7, 2019 · IPR2018-01506 · APJ Brian J Mcnamara · IPR · Rehearing

  The Board denied Cisco’s rehearing request, leaving intact the denial of institution because Cisco did not show that Ingate was a prior art printed publication.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering an institution decision, we look for an abuse of discretion, which may be found if there was (1) an erroneous interpretation of law, (2) a factual finding not supported by substantial evidence, or (3) unreasonable judgment in weighing relevant factors. See 37 C.F.R. § 42.71(c); Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); The Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). For the reason discussed below, Petitioner’s Request for Rehearing is denied.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Although Mr. Beer states that he has “personal knowledge regarding the content and publishing of the Ingate reference,” Mr. Beer does not assert that, except for his authorship, he had any role in publishing the Ingate reference. Ex. 1012, Beer Dec. ¶¶ 3–6. Mr. Beer does not state that he personally placed the Ingate reference on Ingate’s publically accessible website. Id. Mr. Beer offers no testimony as to what the legend “Ingate – Partner Information Guide” means or how the Ingate reference would have been published on the website, such that it would have been accessible to the public in the relevant time frame. Id. Mr. Beer provides no information about Ingate’s procedures for reviewing and approving articles prior to publication on Ingate’s website. Mr. Beer also does not describe how such articles were posted to the website, e.g., Mr. Beer does not describe procedures Ingate followed to load the reference to a publically accessible location, to assign a link to that location, who was responsible for carrying out such procedures, how long such procedures would have taken, how the reference would have been known to the public, or how an interested person would search for the Ingate reference. Dec. 17–18. Mr. Beer’s testimony that the Ingate reference was accessible at the website provides insufficient facts from which we can conclude the Ingate reference was accessible to interested members of the public. Although the Rehearing Request criticizes our Decision as focused on “indexing” (Req. Reh’g 9–10), our comments on indexing concern the factual deficiencies in Mr. Beer’s declaration concerning how a member of the public would have known about or located the Ingate reference: Mr. Beer’s Declaration also fails to address how, or if, the Ingate reference was indexed, or who was responsible for such indexing, such that interested members of the relevant public could obtain the information. For example, Mr. Beer’s declaration is silent about whether the website included any search feature or how keywords or other indicia would have been assigned to the Ingate reference to facilitate its identification by an interested person.” slip op. at 5

  § 102 anticipation
  Patents in suitUS 9,137,205
• Kingston Technology Company, Inc. v. Memory Technologies, LLCInstitution denied
  PTAB · Jul 8, 2019 · IPR2019-00638 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–3, 5–7, 12–15, 19, or 25 were unpatentable on any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “To institute an inter partes review, we must determine that the information presented in the Petition shows “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered all submissions of both parties, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of any of claims 1–3, 5–7, 12–15, 19, and 25. The Petition is denied, and no inter partes review is instituted.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “result in permanent write protection to result in permanent write protection—lacks sufficient clarity. It is unclear whether a single instance of permanent write protection is sufficient to meet the limitation, or whether all future executions of the redefined command must result in permanent write protection until another redefinition occurs. We determine that, in the context of the Specification of the ’370 patent, the redefinition, when accomplished, applies to all future executions of the command until it is redefined again. It is insufficient to meet the limitation if, after the redefinition, the redefined command still may function the way it used to function prior to the redefinition.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable

    “respect to the requirements of “to redefine the command to allow permanent write protection” as we have construed and discussed above. Nothing in Chevallier as identified by Petitioner indicates that setting the secure function bit to some value changes the meaning of the write protect command in the sense that it can no longer be used to provide temporary write protection, and can be used thereafter, until the next redefinition, solely to provide permanent write protection. The secure function bit of Chevallier, identified by Petitioner, serves only to enable the secure function (Ex. 1003 ¶¶ 37, 38, 40) and is nowhere described in Chevallier as changing the meaning of the locking command such that it no longer can be used to cause write protection of a memory block temporarily.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not found

    “ordinary skill in the art would have found ambiguity in Chevallier’s embodiment in which the same command is used both for “locking” and for “securing.” In that regard, Petitioner refers to “any” ambiguity. The same is true with respect to Dr. Baker, who testifies: “a person having ordinary skill in the art would have been particularly motivated to use the secure function bit in that circumstance because doing so would eliminate any ambiguity as to whether the command meant ‘lock’ or ‘secure.’” Ex. 1006 ¶¶ 259, 270, 276 (emphasis added). Also, neither Petitioner nor Dr. Baker in the cited paragraphs of his Declaration addresses the specific disclosure in Chevallier that implements using one command to cause “locking” and the same command to cause “securing.” Chevallier describes: “The secure command used in the present invention, in one embodiment, is also used for another function within the memory device. However, in such an embodiment, the command is written to a different register that is assigned to that particular function.” Ex. 1003 ¶ 18 (emphasis added). Thus, there is no “ambiguity” as to whether the command means “lock” or “secure” in any instance because Chevallier uses different registers to distinguish between them. We are not sufficiently persuaded that there is ambiguity in Chevallier’s disclosure to be resolved. Petitioner’s assertion of a motivation that lies in resolving an ambiguity is not sufficiently supported by the record. Petitioner also argues, assuming that there is ambiguity: “A POSA [person of ordinary skill in the art] would understand that Chevallier’s secure function bit, which enables and disables the secure function, could provide the beneficial specificity—if the secure function is not enabled, then the command results in the lock function; if the bit is enabled, then the command results in the secure function.” Pet. 42 (emphasis added). This argument also is not persuasive. The issue is not whether one with ordinary skill in the art “could” perform an operation but whether one with ordinary skill in the art, without application of improper hindsight, would have reason and want to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015); Fresenius USA, Inc. v. Baxter Intern., Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009). Here, whether one with ordinary skill in the art would want to do in Chevallier what Petitioner proposes is not sufficiently explained. Chevallier expressly states that the secure function it provides is an added feature relative to the locking function. Ex. 1003 ¶ 29. Thus, the two functions are concurrently supported in Chevallier, not mutually exclusively at any one time. The limitation “to redefine the command to allow permanent write protection” as we have construed it above, is contrary to Chevallier’s concept and implementation. Petitioner has not adequately explained why one with ordinary skill in the art would have wanted to modify Chevallier to eliminate concurrent support for both functions. For determining obviousness, the benefits, both lost and gained, in making a modification, should be weighed against each other. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1348 (Fed. Cir. 2000).” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,827,370
• Roland Corporation v. Inmusic Brands, Inc.Rehearing denied
  PTAB · Dec 20, 2018 · IPR2018-00335 · APJ Debra K Stephens · IPR · Rehearing

  The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended basis to show the claimed acoustic noise reducing cavity in the cited references or their combination.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply” (37 C.F.R. § 42.71(d)). The party challenging a decision bears the burden of showing the decision should be modified (id.).” slip op. at 3

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates” (In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted)). “[A]nticipation by inherent disclosure is appropriate only when the [single prior art] reference discloses prior art that must necessarily include the unstated limitation.” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (citation omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (internal quotation marks and citations omitted). Rather, “[t]he inherent result must inevitably result from the disclosed steps....” In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir. 2012) slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “As set forth above, we were not persuaded by Petitioner’s arguments that Puschner anticipated an acoustic noise reducing cavity. Moreover, as we stated in our Decision, Petitioner did not “identify where Yoshino ’117, directed to an ‘electronic percussion instrument and vibration detection apparatus,’ teaches or suggests the claimed ‘acoustic noise reducing cavity’” (Dec. 21). Petitioner provided no cites to Yoshino ’117 to support its assertion that Yoshino ’117 teaches “an acoustic noise reducing cavity in an electronic drum” in either the Petition or the Declaration of Dr. Paradiso with respect to this asserted ground (Pet. 19–20; Ex. 1002 ¶ 74). We also determined Petitioner had not proffered persuasive argument as to why an ordinarily skilled artisan would have found it obvious to combined the teachings (Dec. 21). Rather, Petitioner merely proffered the conclusory statement that “it would have been obvious” because of “a desire to reduce acoustic sound . . .” (Pet. 19–20) –– i.e., it would have been obvious to have the recited feature. Moreover, we determined Petitioner had not “explained how the teachings of Puschner’s and Yoshino ’117’s different structures would have been combined to teach the invention,” as recited in claim 15 (Dec. 21). Petitioner has not identified any matter that the Board misapprehended or overlooked, or identified where each matter was previously addressed, in the relevant portions of the Petition or cited evidence. Petitioner did not fully address how the references taught the limitation or the reasons for combining the teachings.” slip op. at 6

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 9,424,827

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.